Ex Parte Huang

Board of Patent Appeals and Interferences

Jan 31, 2008

10332526 (B.P.A.I. Jan. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHOR HUANG
__________

Appeal 2008-0653
Application 10/332,526
Technology Center 1700
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Decided: January 31, 2008
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Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1-13, 15-18 and 20-24. We have jurisdiction over the appeal pursuant to 35
U.S.C. § 6(b).
We AFFIRM.

INTRODUCTION
Appellant discloses a mixture of relatively low molecular weight
ethylene copolymers having certain characteristics and relatively high
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Application 10/332,526

molecular weight amorphous polymers; the mixture is useful as a viscosity
improver for lubricating oils (Specification 1: 7-11)
Claim 1 is illustrative:
1. A mixture comprising [sic :]
A) a copolymer comprising from about 60 to about 85% by weight of
units derived from ethylene, and having
(a) Mw measured by gel permeation chromatography employing
polystyrene standard ranging from about 50,000 up to 110,000 and/or (f) SSI
≤ 18;
(b) density (D) ranging from about 845 to about 895 kg/m³;
(c) Mw / Mn less than 3;
(d) melting point (Tm) measured by differential scanning calorimeter
ranging from about 15°С to about 60°С; and
(e) degree of crystallinity ≥ 15%; and
B) an amorphous polymer of one or more olefins selected from the
group consisting of polybutenes, ethylene-propylene copolymers, and
ethylene-propylene-diene copolymers, having Mw ranging from about
130,000 to about 1,000,000 having degree of crystallinity ≤ 5%.

The Examiner relies on the following prior art reference as evidence
of unpatentability:
Olivier EP 0 637 611 B1 Oct. 29, 2003

The rejections as presented by the Examiner are as follows:
Claims 1-13, 15-18 and 20-24 are rejected under 35 U.S.C. § 102(b) as
being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Olivier.

Appellant argues only claim 1. Accordingly, claims 2-13, 15-18 and
20-24 stands or fall with claim 1.

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OPINION
35 U.S.C. § 102 REJECTION OVER OLIVIER
Appellant argues that Olivier does not describe with sufficient
specificity mixing a high molecular weight copolymer of low crystallinity
and a low molecular weight copolymer of high ethylene content so as to
constitute anticipation of the claimed invention (Reply Br. 2). We agree.
“[R]ejections under 35 U.S.C. § 102 are proper only when the claimed
subject matter is identically disclosed or described ‘in the prior art.’” In re
Arkley, 455 F.2d 586, 587 (CCPA 1972). Therefore, in order to anticipate, a
reference must identify something falling within the claimed subject matter
with sufficient specificity to constitute a description thereof within the
purview of § 102. In re Schaumann, 572 F.2d 312, 317 (CCPA 1978).
Appellant claims a mixture comprising a high-ethylene content
copolymer having a weight average molecular weight of “about 50,000 up to
110,000” and an amorphous polymer having a weight average molecular
weight of “about 130,000 to about 1,000,000” (claim 1).
Olivier broadly discloses a blend of a high-ethylene copolymer having
weight average molecular weight from about 80,000 to about 1,750,000 and
a low-ethylene copolymer having a weight average molecular weight that
also may range from about 80,000 to about 1,750,000 (Olivier ¶¶ [0023] to
[0024])1. But while Olivier generally discloses blending polymers of the
type and molecular weight overlapping those of the claim, there is no

1 The Examiner calculated the weight-average molecular weight by
multiplying each of Olivier’s disclosed end points for the number-average
molecular weight (i.e., 40,000 and 250,000) by Olivier’s range of the
molecular weight distribution (Mw/Mn) (i.e., 2 to 7). Appellant has not
challenged the Examiner’s calculations.
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specific “description” of selecting the claimed high and low molecular
weight combination.
We further find that there is no specific disclosure of a species falling
within the genus of combinations of claim 1. See In re Slayter, 276 F.2d
408, 411 (C.C.P.A. 1960) (“It is well settled that a generic claim cannot be
allowed to an applicant if the prior art discloses a species falling within the
claimed genus.”). The “Polymer A,” which the Examiner refers to as a
specific example falling within the claimed molecular weight ranges for
Appellant’s copolymer “A)” recited in claim 1 (Ans. 3 and 5), is used by
Olivier only in the “Comparative Example 1” and is not mixed with a
copolymer having a molecular weight falling within the range recited by
Appellant for copolymer “B)” of claim 1 (Olivier ¶ [0046]).
From such disclosures, we find Olivier’s disclosure of a blend of a
high-ethylene content copolymer and a low-ethylene content copolymer
does not describe with sufficient specificity the particular molecular weight
combination of the high-ethylene content copolymer and the low-ethylene
content copolymer so as to constitute anticipation of Appellant’s claimed
mixture.
Accordingly, we do not sustain the Examiner’s § 102(b) rejection of
claims 1-13, 15-18 and 20-24 over Olivier.

35 U.S.C. § 103 REJECTION OVER OLIVIER
Appellant argues that there is no motivation for Olivier to combine a
high molecular weight amorphous polymer with a low molecular weight
high-ethylene copolymer (App. Br. 6). Appellant also argues that the data in
the Specification indicates that using the claimed mixture produces
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unexpected results so as to overcome any prima facie case of obviousness
(App. Br. 6-8).
We have considered all of Appellant’s arguments and evidence, and
are unpersuaded for the reasons below.
Olivier discloses forming a blend of a high-ethylene content and low-
ethylene content copolymer (Olivier ¶¶ [0022] to [0026]). The acceptable
weight-average molecular weight range for the low-ethylene content and
high-ethylene content copolymers is from about 80,000 to about 1,750,000.
From Olivier’s disclosures, we conclude that it would have been
obvious to blend a high molecular weight (e.g., 500,000), low-ethylene
content copolymer with a low molecular weight (e.g., 80,000), high-ethylene
content copolymer because Olivier discloses that such molecular weights of
the copolymers would be suitable and that the copolymers are blended to
achieve the desired molecular weight of the blend (Olivier ¶¶ [0023] to
[0027]).
We add that it would have been obvious to blend a high molecular
weight (e.g., 500,000), low-ethylene content copolymer with a low
molecular weight (e.g., 80,000) high-ethylene content copolymer because
such predictably unites old elements (i.e., a high molecular weight, low-
ethylene content copolymer and low molecular weight, high-ethylene
content copolymer) with no change in their respective functions (i.e., as
viscosity index improvers (Olivier 2-3)). Merck & Co., Inc. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
Contrary to Appellant’s lack of motivation arguments, we do not find
that Olivier teaches away from using low molecular weight copolymers.
Rather, we find that Olivier indicates that low molecular weights (e.g.,
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80,000 weight-average molecular weight) may be used for the copolymers
(Olivier ¶¶ [0023], [0024]).
Appellant attempts to rebut the prima facie case of obviousness
established by the Examiner by arguing that the data in the Specification
establishes unexpected results. Objective evidence of nonobviousness (i.e.,
unexpected results) must be commensurate in scope with the claims which
the evidence is offered to support. In re Peterson, 315 F.3d
1325, 1329-31 (Fed. Cir. 2003).
Appellant’s proffered data compares blends of low-ethylene content
copolymers having high molecular weight and high-ethylene content
copolymers having low molecular weight. However, Appellant’s claim does
not require the amorphous high molecular weight copolymer have a low-
ethylene content. Also, the range of molecular weights for the high-ethylene
content copolymer is claimed as “50,000 up to 110,000” and the range of
molecular weights for the low-ethylene content copolymer is claimed as
being “from about 130,000 to about 1,000,000” (claim 1). However,
Appellant’s data only includes three molecular weights (i.e., 200,000;
88,000; 100,000) that fall within the claimed ranges. Appellant’s three data
points are not commensurate with the broadly claimed molecular weight
ranges. Therefore, Appellant’s proffered data is not commensurate with the
claims which the evidence is offered to support. Peterson, 315 F.3d at 1329-
31. Accordingly, we determine, after weighing the totality of the evidence,
that Appellant’s evidence of unexpected results does not rebut the
Examiner’s prima facie case of obviousness.
We sustain the Examiner’s § 103 rejection of claims 1-13, 15-18 and
20-24 over Olivier.
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DECISION
We do not sustain the Examiner’s § 102(b) rejection of claims 1-13,
15-18 and 20-24 over Olivier.
We do sustain the Examiner’s § 103(a) rejection of claims 1-13, 15-18
and 20-24 over Olivier.
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

tc

David M. Shold
The Lubrizol Corporation
29400 Lakeland Boulevard
Wickliffe, OH 44092-2298
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